180S tries to head off rival wrap-around ear muff

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UNITED STATES DISTRICT COURT
DISTRICT OF MARYLAND
(BALTIMORE DIVISION)
180S, INC.,
701 East Pratt Street, Suite 180,
Baltimore, MD 21202-3101,
a Delaware corporation
Plaintiff,
and
180S, LLC,
701 East Pratt Street, Suite 180,
Baltimore, MD 21202-3101,
a Maryland limited liability company
Plaintiff,
)
)
)
)
)
)
)
)
)
)
)
)
v.
)
)
GORDINI U.S.A., INC.
)
67 Arlington Street
)
Essex Junction, VT
)
a Vermont corporation
)
Defendant,
)
____________________________________ )
Civil Action No. 1:08-cv-00177
COMPLAINT FOR PATENT
INFRINGEMENT AND TRADE
DRESS INFRINGEMENT
DEMAND FOR JURY TRIAL
Plaintiffs 180s, Inc. and 180s, LLC, (collectively “180s” or “Plaintiffs”) allege as follows:
THE PARTIES
1.
180s, Inc. is a corporation organized under the laws of the State of Delaware, having its
principal place of business at 701 East Pratt Street, Suite 180, Baltimore, MD 21202-3101. 180s, Inc.
owns all right, title, and interest in the intellectual property that is the subject matter of this suit. 180s,
LLC is a limited liability company organized under the laws of the State of Maryland, having its
principal place of business at 701 East Pratt Street, Suite 180, Baltimore, MD 21202-3101. 180s, LLC is
a wholly-owned subsidiary of 180s, Inc. and an exclusive licensee of the intellectual property that is the
subject matter of this suit.
2.
Defendant Gordini U.S.A., Inc. (“Gordini”), on information and belief, is a corporation
organized under the laws of the State of Vermont, having its principal place of business at 67 Arlington
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Street, Essex Junction, VT 05452. According to the gordini.com website, Gordini develops and
manufactures various types of cold weather apparel and accessories, including men’s, women’s, and
children’s gloves, hats, headbands, shirts, pants, goggles, socks, and earmuffs, for distribution through
dealers and retailers.
JURISDICTION AND VENUE
3.
This is a civil action for (i) patent infringement arising under the United States patent
statutes, Title 35, United States Code §§ 1 et seq.; (ii) trade dress infringement under Section 43(a) of
the Lanham Act, Title 15, United States Code, § 1125(a), and (iii) common law trade dress
infringement.
4.
This Court has jurisdiction of the subject matter of this action under Title 28, United
States Code §§ 1331, 1338(a), and 1367, and Title 15, United States Code § 1121.
5.
This Court has personal jurisdiction over Gordini because the defendant is doing and has
done substantial business in this judicial district and has committed acts of infringement, and other acts
complained of herein, in this judicial district.
6.
Venue is proper in this District pursuant to 28 U.S.C. §§ 1391(b)-(c) and 1400(b) because
Gordini has committed acts of infringement and does business in this District.
BACKGROUND
7.
180s designs, manufactures and sells innovative performance wear, including ear
warmers, gloves, and glasses. 180s was founded in 1994 by Brian E. Le Gette and Ronald L. Wilson, II,
two University of Pennsylvania Wharton Business School students, who invented and patented the first
of its kind wrap-behind-the-head ear warmer. When introduced into the marketplace in 1995, the 180s
ear warmer achieved immediate success.
8.
180s’ success has been driven largely by its innovative ear warmer products, which are
protected by a significant portfolio of patents, including the patents asserted in this action, and a
trademark registration and common law trade dress rights protecting the distinctive and non-functional
2.
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trade dress embodied in the configuration and appearance of the products. True and correct
reproductions of photographs of a “180s” brand ear warmer are attached as Exhibits A and B. In
addition to the features protected by the trademark registration, the “180s” ear warmer also includes
distinctive trade dress in some or all of the following elements: the overall shape of the product, the
wrap-behind-the-head design, the fabric selection, the overlap of one ear portion over the other in the
collapsed configuration, the color scheme of the fabric, and the narrow band connecting the larger ear
pieces.
9.
180s has invested considerable effort in promoting its ear warmer products and the
associated trade dress. Since at least as early as 1995, 180s has consistently and widely marketed and
advertised its ear warmer products by highlighting their distinctive trade dress. As a result, the ear
warmer trade dress has become widely recognized by consumers and has acquired secondary meaning in
the minds of the consuming public such that it serves as an indicator of the source of the ear warmer
product, and therefore represents a valuable asset to 180s.
10.
The ear warmer trade dress, while enormously valuable as a source indicator, is not
essential to the use or purpose of the products. Moreover, 180s’ exclusive rights in its trade dress do not
put competitors at a significant non-reputation related disadvantage.
11.
Gordini manufactures and sells products, some of which compete with products
manufactured and sold by 180s, including “Lobz®,” a wrap-behind-the-head earmuff. Gordini’s Lobz®
product contains many of the same elements as the 180s brand ear warmer trade dress.
12.
On December 27, 2005, United States Patent No. 6,978,483 (“the ‘483 patent”), entitled
“Apparatus and Method for Making an Ear Warmer and an Ear Warmer Frame,” was duly and legally
issued to Matthew Isom, et al. The ‘483 patent has been assigned to 180s, Inc. A true and correct copy
of the ‘483 patent is attached as Exhibit C.
13.
On May 9, 2006, United States Trademark Registration No. 3,089,225 (“the ‘225
Registration”) was duly and legally issued to 180’s Inc. A true and correct copy of the ‘225 Registration
3.
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is attached as Exhibit D.
14.
On June 19, 2007, United States Patent No. D545,001 (“the ‘001 Patent”), entitled “Ear
Warmer Having an External Frame,” was duly and legally issued to Brian Edward Le Gette et al. The
‘001 Patent has been assigned to 180s, Inc. A true and correct copy of the ‘001 patent is attached as
Exhibit E.
15.
180s, Inc. is the sole owner of the entire right, title, and interest in the ‘483 and ‘001
Patents, and 180s, LLC is an exclusive licensee under the ‘483 and ‘001 Patents.
16.
180s Inc. is the sole owner of the entire right, title, and interest in the trade dress as
shown in the ‘225 Registration. The remaining trade dress rights in 180s’ ear warmers have been
assigned to 180s, Inc. from 180s, LLC. These collective trade dress rights are exclusively licensed to
180s, LLC.
17.
True and correct reproductions of photographs of a Lobz® earmuffs product and
packaging are attached as Exhibits F and G. As shown in Exhibit F, Gordini Lobz® earmuffs are similar
to the 180s ear warmer products in at least the following ways: the overall shape of the product, the
wrap-behind-the-head design, the fabric selection, the overlap of one ear portion over the other in the
collapsed configuration, the color scheme of the fabric, and the narrow band connecting the larger ear
pieces. This similarity in design would cause confusion to an ordinary observer as to the manufacturer
of the product. As shown in Exhibit G, the design and packaging of the Gordini Lobz® earmuffs portray
the product in a manner confusingly similar to the trade dress of the ear warmers owned by 180s.
18.
On information and belief, before manufacturing and selling the Lobz® earmuffs product,
Gordini had prior knowledge of 180s’ brand ear warmers and 180s’ ‘483 and ‘001 Patents.
COUNT ONE—INFRINGEMENT OF THE ‘483 PATENT
19.
Plaintiffs reallege and incorporate herein by this reference paragraphs 1 through 18 of
this Complaint as though fully set forth herein.
20.
180s, Inc. is the sole owner of the entire right, title, and interest in the ‘483 Patent, and
4.
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180s, LLC is an exclusive licensee under the ‘483 Patent.
21.
Gordini has infringed one or more claims of the ‘483 Patent under Section 271 of Title 35
of the United States Code by making, using, selling, and/or offering to sell in the United States and/or
importing into the United States its Lobz® earmuffs product, which embodies the inventions claimed in
the ‘483 Patent.
22.
On information and belief, Gordini will continue to infringe the ‘483 Patent unless
enjoined by this Court.
23.
On information and belief, the infringement of the ‘483 Patent by Gordini has been
24.
Plaintiffs have been, and will continue to be, damaged and irreparably harmed by the
willful.
actions of Gordini, which will continue unless Gordini is enjoined by this Court.
COUNT TWO—INFRINGEMENT OF THE ‘001 PATENT
25.
Plaintiffs reallege and incorporate herein by this reference paragraphs 1 through 18 of
this Complaint as though fully set forth herein.
26.
180s, Inc. is the sole owner of the entire right, title, and interest in the ‘001 Patent, and
180s, LLC is an exclusive licensee under the ‘001 Patent.
27.
Gordini has infringed the ‘001 Patent under Sections 271 and 289 of Title 35 of the
United States Code by making, using, selling, and/or offering to sell in the United States and/or
importing into the United States its Lobz® earmuff product, which embodies the inventions claimed in
the ‘001 Patent.
28.
Gordini has applied the patented design of the claim of the ‘001 Patent, or a colorable
imitation thereof, to an article of manufacture for the purpose of sale and/or has sold or exposed for sale
an article of manufacture to which such design or colorable imitation has been applied, such that an
ordinary observer would be led to believe that the Gordini Lobz® earmuff product is a 180s ear warmer
product.
5.
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29.
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On information and belief, Gordini will continue to infringe the ‘001 Patent unless
enjoined by this Court.
30.
On information and belief, the infringement of the ‘001 Patent by Gordini has been
31.
Plaintiffs have been, and will continue to be, damaged and irreparably harmed by the
willful.
actions of Gordini, which will continue unless Gordini is enjoined by this Court.
COUNT THREE—TRADE DRESS INFRINGEMENT UNDER 15 U.S.C. 1125(a)
(LANHAM ACT §43(a))
32.
Plaintiffs reallege and incorporate herein by this reference paragraphs 1 through 18 of
this Complaint as though fully set forth herein.
33.
After Plaintiffs established protectable trade dress rights in their ear warmer products
under common law, and on information and belief after the issuance of the ‘225 Registration, Gordini
began selling the Lobz® earmuffs product having trade dress confusingly similar to the trade dress of the
ear warmer products sold by 180s, LLC, aspects of which are protected by the ‘225 Registration, which
trade dress is owned by 180s, Inc. and exclusively licensed to 180s, LLC.
34.
The trade dress of the Lobz® earmuffs product is likely to cause confusion, mistake, or
deception as to the source or sponsorship of the product.
35.
Gordini had constructive notice of 180s, Inc.’s ownership of the trade dress disclosed in
the ‘225 Registration as of May 9, 2006, the date of registration, pursuant to 15 U.S.C. § 1072. On
information and belief, Gordini had knowledge of the entirety of the trade dress of the ear warmer
products sold by 180s, LLC, and intentionally sold the Lobz® earmuffs product having trade dress
confusingly similar to such trade dress, in knowing, deliberate, and willful disregard of Plaintiffs’ trade
dress rights.
36.
The actions of Gordini described above, and specifically, without limitation, Gordini’s
use of the Plaintiffs’ trade dress for ear covering products, constitute trade dress infringement in
violation of Section 43(a) of the Lanham Act.
6.
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37.
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Plaintiffs have been, and will continue to be, damaged and irreparably harmed by the
actions of Gordini, which will continue unless Gordini is enjoined by this Court.
COUNT FOUR—COMMON LAW TRADE DRESS INFRINGEMENT
38.
Plaintiffs reallege and incorporate herein by this reference paragraphs 1 through 18 and
32 through 37 of this Complaint as though fully set forth herein.
39.
The actions of Gordini described above, and specifically, without limitation, Gordini’s
use of the Plaintiffs’ trade dress for ear covering products, constitute common law trade dress
infringement.
40.
Plaintiffs have been, and will continue to be, damaged and irreparably harmed by the
actions of Gordini, which will continue unless Gordini is enjoined by this Court.
REQUEST FOR RELIEF
WHEREFORE, the Plaintiffs request the following relief:
A.
a preliminary and permanent injunction against Gordini, its respective officers, agents,
servants, employees, attorneys, parent and subsidiary corporations, assigns and
successors in interest, and those persons in active concert or participation with them,
enjoining them from continued acts of infringement of the ‘483 Patent;
B.
a preliminary and permanent injunction against Gordini, its respective officers, agents,
servants, employees, attorneys, parent and subsidiary corporations, assigns and
successors in interest, and those persons in active concert or participation with them,
enjoining them from continued acts of infringement of the ‘001 Patent;
C.
a preliminary and permanent injunction against Gordini, their respective officers, agents,
servants, employees, attorneys, parent and subsidiary corporations, assigns and
successors in interest, and those persons in active concert or participation with them,
enjoining them from continued acts of infringement of the Plaintiffs’ trade dress;
D.
a judgment holding Gordini liable for infringement of the ‘483 Patent;
7.
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E.
a judgment holding Gordini liable for infringement of the ‘001 Patent;
F.
a judgment holding Gordini liable for infringement of the Plaintiffs’ trade dress;
G.
an accounting of damages resulting from the infringement by Gordini of the ‘483 Patent,
together with prejudgment and postjudgment interest;
H.
an accounting of damages and award of the profits of Gordini resulting from the
infringement by Gordini of the ‘001 Patent, together with prejudgment and postjudgment
interest;
I.
an accounting and award of the profits of Gordini and Plaintiffs’ damages resulting from
the infringement of Plaintiffs’ trade dress by Gordini;
J.
that the infringement by Gordini of the ‘483 Patent be adjudged willful and Plaintiffs’
damages be trebled pursuant to Title 35, United States Code, § 284;
K.
that the infringement by Gordini of the ‘001 Patent be adjudged willful and Plaintiffs’
damages be trebled pursuant to Title 35, United States Code, § 284;
L.
that this be adjudged an exceptional case and that the Plaintiffs be awarded their
attorneys’ fees pursuant to Title 35, United States Code, § 285; and
M.
that the Court grant the Plaintiffs such other relief as it deems just and equitable.
Dated: January 22, 2008
Respectfully submitted by:
/s/ Douglas P. Lobel
Douglas P. Lobel (Bar No. 12264)
dlobel@cooley.com
Jonathan G. Graves
jgraves@cooley.com
Scott A. Cole
scole@cooley.com
COOLEY GODWARD KRONISH LLP
One Freedom Square
Reston Town Center
11951 Freedom Drive
Reston, Virginia 20190
Telephone: (703) 456-8000
8.
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Facsimile: (703) 456-8100
Attorneys for Plaintiffs
180s, Inc. and 180s, LLC
9.
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DEMAND FOR JURY TRIAL
Pursuant to Rule 38 of the Federal Rules of Civil Procedure, Plaintiffs 180s, Inc. and 180s, LLC,
hereby demand a trial by jury of all issues triable of right by a jury.
Dated: January 22, 2008
COOLEY GODWARD KRONISH LLP
/s/ Douglas P. Lobel
Douglas P. Lobel (Bar No. 12264)
dlobel@cooley.com
Jonathan G. Graves
jgraves@cooley.com
Scott A. Cole
scole@cooley.com
One Freedom Square
Reston Town Center
11951 Freedom Drive
Reston, Virginia 20190
Telephone: (703) 456-8000
Facsimile: (703) 456-8100
Attorneys for Plaintiffs
180s, Inc. and 180s, LLC
10.
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EXHIBIT A
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